Judgments nº T-609/15 of Tribunal General de la Unión Europea, September 21, 2017

• Resolution Date: September 21, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-609/15

(EU trade mark - Invalidity proceedings - EU figurative mark BASIC - Earlier national trade names basic and basic AG - Relative ground for refusal - Use in the course of trade of a sign of more than mere local significance - Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009) In Case T-609/15,

Repsol YPF, SA, established in Madrid (Spain), represented initially by J.-B. Devaureix and L. Montoya Terán, and subsequently by J. Erdozain López, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Hanf, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the Court, being

Basic AG Lebensmittelhandel, established in Munich (Germany), represented by D. Altenburg and H. Bickel, lawyers,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 11 August 2015 (Case R 2384/2013-1), relating to invalidity proceedings between Basic Lebensmittelhandel and Repsol, SA,

THE GENERAL COURT (Eighth Chamber),

composed of A.M. Collins (Rapporteur), President, R. Barents and J. Passer, Judges,

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 29 October 2015,

having regard to the response of EUIPO lodged at the Court Registry on 29 January 2016,

having regard to the response of the intervener lodged at the Court Registry on 4 February 2016,

further to the hearing on 18 May 2017,

gives the following

Judgment

Background to the dispute

1 On 29 January 2007, the applicant, Repsol YPF, SA, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

2 Registration as a mark was sought for the following figurative sign, claiming the colours blue, red, orange and white:

3 The services in respect of which registration was sought are in, inter alia, Classes 35 and 39 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, inter alia, for each of those classes, to the following description:

- Class 35: ‘Commercial retailing of tobacco, press, batteries, playthings’;

- Class 39: ‘Distribution of staple foodstuffs, pastry and confectionery, ices, prepared meals, tobacco, press, batteries, playthings’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 34/2007 of 16 July 2007.

5 The mark applied for was registered on 4 May 2009 under number 5648159.

6 On 26 September 2011, the intervener, Basic AG Lebensmittelhandel, submitted an application seeking that the contested mark be declared partially invalid for the services referred to in paragraph 3 above (‘the contested services’), on the basis, inter alia, of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4)(b) thereof. In support of its application, in so far as it was based on those provisions, the intervener relied on the ‘business signs’, within the meaning of Paragaph 5 of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz) (German Law on the protection of trade marks and other distinctive signs) of 25 October 1994 (BGBl. 1994 I, p. 3082 and BGBl. 1995 I, p. 156; ‘the Markengesetz’), basic and basic AG, which, it claims, it uses in the course of trade in Germany and in Austria to provide services of ‘retail of foodstuffs, drugstore articles, organic and other consumer products, restaurant services’.

7 The intervener provided the following evidence in annex to its application for a declaration of invalidity of 26 September 2011:

- three screenshots from its website printed on 25 July 2011, the first displaying information on the company dating from 1 July 2011 and the other two displaying maps dating from 2010 showing the location of the intervener’s supermarkets in Germany and Austria;

- a screenshot from its website printed on 25 July 2011 displaying information, dating from 2010, on certain ‘basic’ products;

- its annual report for the year 2006;

- its annual report for the year 2004;

- its annual report for the year 2005;

- a letter from Biogarten Handels GmbH to ‘basic AG’, dated 21 April 2006, detailing the bonus credits issued by the former to the latter for the turnover obtained by ‘basic AG’ in the first quarter of 2006 from the sale of Biogarten products;

- a letter from Biogarten to ‘basic AG’, dated 13 December 2005, detailing the bonus credits issued by the former to the latter for the turnover obtained by ‘basic AG’ from April to September 2005 from the sale of Biogarten products;

- a delivery notice, dated 15 April 1999, issued by the company Nordlicht Naturkost Handels GmbH to ‘basic AG’ ‘Bio-Supermarkt’;

- an invoice, dated 13 November 2001, issued by Nordlicht Naturkost to ‘basic AG’ ‘Bio-Supermarkt’;

- sales statistics, dated 1 December 2006, published by Herrmannsdorfer Landwerkstätten Glonn GmbH & Co. KG, a supplier of organic foodstuffs, notably concerning ‘basic’;

- an affidavit, dated 19 September 2011, made by a member of the intervener’s marketing department;

- tables detailing the turnover ‘basic’ claims to have obtained up until July 2009, December 2010 and July 2011;

- marketing brochures of ‘basic’ supermarkets from June, July and December 2003, January, February, March, April, September and November 2004, June, October and November 2005, and January, February, April, May and December 2006;

- undated promotional and advertising material;

- an ‘Entrepreneur of the Year 2006’ certificate, dated 21 September 2006, awarded to two directors of ‘basic AG’;

- press clippings from 2003 to 2006;

- a judgment of the Landgericht München I (Regional Court, Munich I, Germany) of 9 September 2006.

8 In its application for a declaration of invalidity, the intervener also cited the relevant provisions of Paragraphs 5 and 15 of the Markengesetz and decisions of German courts interpreting those provisions.

9 By decision of 8 October 2013, the Cancellation Division granted the application for a declaration of invalidity on the basis of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof and declared the partial invalidity of the contested mark to the extent that it was registered for the contested services.

10 On 2 December 2013, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Cancellation Division’s decision. It filed a statement of grounds on 7 February 2014.

11 By decision of 11 August 2015 (‘the contested decision’), the First Board of Appeal of EUIPO confirmed the decision of the Cancellation Division and dismissed the appeal.

12 In the contested decision, the Board of Appeal examined the conditions laid down in Article 8(4) of Regulation No 207/2009, whereby a non-registered trade mark or other sign used in the course of trade allows its holder to obtain a declaration of invalidity of a trade mark registered subsequently.

13 In that regard, in the first place, the Board of Appeal confirmed the finding of the Cancellation Division that the evidence submitted by the intervener, as described in paragraph 7 above, proved that a significant part of the relevant German public, which consisted of both the average consumer and professionals in the field of food retail, recognised ‘basic’ as a ‘business identifier’ (paragraph 26 of the contested decision).

14 First, as regards the geographical dimension of the sign’s significance, the Board of Appeal noted that the intervener had proved widespread use of the business sign (or company name) basic in Germany (paragraphs 27 and 30 of the contested decision).

15 Secondly, as regards the economic dimension of the sign’s significance, the Board of Appeal found that the evidence produced showed that the company name basic had been the subject of ‘uninterrupted use’ between 1999 and 2011 and, consequently, on the dates relevant to the present case, namely 29 January 2007 and 26 September 2011 (paragraphs 24 and 32 of the contested decision). It found that the activities carried out by the intervener under that name had had an economic impact for both the end consumer and professionals in the field of food retail (paragraph 34 of the contested decision). It noted, inter alia, that the intervener had adduced evidence not only of use of the figurative version of the word ‘basic’, of that word associated with the word ‘aktiengesellschaft’, and of the slogan ‘Bio für alle’, but also of frequent use of the word ‘basic’ on its own. It concluded that it was established that the intervener had used the word ‘basic’ per se as a ‘business indicator’ and that that term was perceived as such by the relevant public. That public ‘also perceive[d] the [basic] sign in its figurative version and/or with the inclusion of the descriptive term ‘aktiengesellschaft’ (indicating the type of corporation) or with the slogan ‘Bio für alle’ (‘Organic for all’) as the designation of the company when used, for example, on the cover of promotional brochures’ (paragraph 38 of the contested decision).

16 In the second place, the Board of Appeal found that the basic sign, which constituted a business sign within the meaning of Paragraph 5(2) of the Markengesetz, conferred on the intervener, in accordance with Paragraph 15(1) and (2) of the Markengesetz, an exclusive right to prohibit the use of a subsequent sign if there was a likelihood of confusion between them (paragraph 49 of the contested decision). It concluded that there was such a likelihood in the present case in the minds of the relevant public in Germany, and that...